Nathalie Dreyfus

An ICANN working group has been given the task of analyzing the trademark protection mechanisms in light of its new gTLDs program. The group will need to improve these mechanisms in order to provide better protection for trademark holders.

A need for change

Needless to say, ICANN has already published requirements on trademark rights protection mechanisms.

This time however, a review of all mechanisms seems inevitable given they were created at the time of the previous round of the gTLDs and are therefore, tested since only a few yers.

The URS procedure (Uniform Rapid Suspension),  which aims to protect registered trademarks, has also been criticized. The procedure provides trademark holders with a quicker and less expensive protection system but has proven in practice, to be somewhat unsuccessful in protecting trademark holders. Through URS, trademark holders can forbid the unlawful use of a domain name usurping their brand. However, they have no control on a potential transfer of the litigious domain name..

Different rights protection mechanisms

The working group, which consists of approximately two hundred people, will review the different mechanisms, including the URS system.

The group will also review the Trademark Clearinghouse system. Opened on March 26, 2013, this particular mechanism allows trademark holders to input data related to their trademark into a global database, both before and during the launch of new gTLDs. It then notifies trademark holders as soon as an identical domain name carrying a new extension is registered by a third party.

Furthermore, the working group will take into consideration the (Uniform Dispute Resolution Policy), which deals with disputes relating to domain names. UDRP provides an alternative dispute resolution procedure for trademark holders when a domain name uses their trademark. The issue here is about finding user-friendly procedures for trademark holders.

Wrongdoers have swindled domain name holders by selling false domain name protection certificates pretending to represent ICANN.

A well-run organisation

The swindlers implemented a well-thought out procedure in order to trick domain name holders. They made false threats aiming in order to scare domain name holders and then offered paid protection services.

They also usurped ICANN’s logo which made the fake certificates look authentic.

ICANN has never delivered certificates to domain name holders and has never directly charged domain name holders, making this practice all the more fraudulent. In fact, the application to register a domain name is always made through an ICANN-accredited registrar.

The role of ICANN

ICANN’s mission is to guararantee stable Internet access to Web users around the world. Since its creation in 1998, ICANN allows for e-mail addresses and websites to run smoothly by acting as a central entity assigning names on the Internet. ICANN’s authority is worldwide and its decisions are binding in all countries.

This attempt of fraud raises the question of the powers of ICANN. This new scam could lead to Internet users questioning the authority of   ICANN and its protection services.

A novelty in the field of Russian intellectual property law: as of June 1st, 2016, an applicant for an infringement action is required to submit a letter of formal notice to the defendant and wait 30 days before initiating legal proceedings. Thus, an infringement action must always begin with an attempt to resolve the dispute amicably.

The requirement applies to civil cases except for a limited number of instances such as for example, cancellation actions on the grounds of non-use.

Prior to this amendment, sending a letter of formal notice before filing an infringement claim was optional. As of June 1^st however, if an applicant files an infringement claim before a judge without having submitted a letter of formal notice, or if the applicant fails to wait 30 days after the issuance of such a notice, the action will be considered inadmissible.

The reform implies a development in the  evidence to be produced by the parties during proceedings. Indeed, the parties will have to produce evidence of their amicable discussions in court. It is also worth noting that following the wording of the law, the applicant will most likely have to enclose a copy of the accompanying letter sent by registered mail, in order to confirm that the letter of formal notice was actually sent.

The new legislation does not require the applicant to produce evidence that the defendant has received the letter. However, in practice, we can expect that in order to delay the proceedings, the defendant will argue that he/she did not receive the formal notice. In such a case, the defendant would not have had the opportunity to remedy the infringement prior to any proceedings and the out-of-court phase would not been complied with.

This reform necessarily implies changes in the trademarks and domain name defence strategy in the Russian Federation.

It will be interesting to follow the case law pertaining to these novelties and their implementation.

By allowing a user access to a social media network, he or she accepts all the provisions outlined in the Terms of Use without actually being in a position to question any of these. It is therefore legitimate to question the binding force of these rules: what is the validity of these terms under French law?

What is the legal nature of the terms of use of social media networks ?

“Terms of use”, fundamentally, is a contractual document laying down the rules of the social media network. They are binding upon the social media network and the user and as such, article 1194 of the French Civil Code applies:: “Agreements bind not only as to what is therein expressed, but also as to all the consequences that equity, usage, or law impose upon the obligation according to its nature”.

However, the terms are first and foremost an adhesion contract in that the user is not in a position to actually negotiate the terms of the contract. Therefore, while the terms of social media networks are legally binding contracts, they are hard to access and contain legally questionable provisions: their binding force is therefore open to debate.

Are the terms of use of social media networks enforceable?

Terms of use are often criticized for being difficult to access. The terms are often reproduced on documents separate from the contract and it is not always easy to prove that the contracting party was aware and accepted them.

For some terms, relating to the protection of personal data, access is even more tenuous since the user needs to click on a link within the terms in order to review the relevant rules or policies.

Furthermore, the terms of social media networks are regularly changed and users are not explicitly informed of modifications.

Are the terms of use of social media networks lawful ?

Social media networks are aware of content posted by a user and the terms implement licences allowing them to use that content. A judgment of the Paris Court of first instance (“Tribunal de Grande Instance de Paris”) on May 29, 2012, TF1 vs. YouTube, was an opportunity for judges to indicate that the license agreement in YouTube’s Terms of Use was questionable under copyright law, since it failed to set out limits in terms of time and space to the free transfer of rights.

Can some clauses of the terms of social media networks be regarded as unfair under French law?

The clauses, as presented, cause a significant imbalance between the rights and obligations of the parties. The general public and consumer rights groups therefore tend to condemn these clauses, which they define as unfair.

The majority of the clauses in question deal with the protection of privacy and personal data. The Unfair Terms Commission, in its recommendation No. 2014-02 of November 7, 2014 recommends the removal of terms relating to the legibility of the contract, the formation of the contract, personal data, intellectual property rights or the modification of the terms as these create a significant imbalance between the rights and obligations of the parties to the contract.

Until recently, it was not possible in France to file a class action. The Hamon Act of March 17, 2014, introduced the class action in the Consumer Code, thus enabling consumer associations to take legal action to obtain compensation for individual harm where a social media network [sic] has failed to comply with its legal or contractual obligations.

Social media network terms of use and conflicts of jurisdiction

The terms of use of social media networks are now being construed in conjunction with rules regarding conflict of law and jurisdiction. In 2012, the Pau Court of Appeal clarified the applicability of terls in the framework of an action brought against Facebook. A Facebook user objected to a clause of the terms of use conferring jurisdiction to the California courts. The judges rejected the application, ruling that the clause was written in English and the font was too small [sic]. This judgment confirms that the parties to a contract can decide on the competent jurisdiction.

In a more recent decision of March 5, 2015, judges of the Paris Court of first instance (“Tribunal de Grande Instance de Paris”) considered that they had jurisdiction over the validity of the jurisdiction clause contained in the Facebook terms of use. The Court then declared the jurisdiction clause invalid and unenforceable on the grounds of the unfair nature of the clause. The Court of appeal, in its judgment of February 12, 2016, upheld the decision. Consequently, the Paris Court of first instance has jurisdiction over the dispute between the social media network and a Facebook user whose account had been disabled (after posting a photo of a famous painting by Courbet called “L’origine du monde“.)

The question of the scope of application of the solution arises following the publication of the Ordinance No. 2016-131 of February 10, 2016 reforming the French Civil Code. Article 1171 of the Civil Code, which will come into effect on October 1, 2016, states that “in an adhesion contract, any clause which generates a significant imbalance between the rights and obligations of the parties is deemed to be void.” Professionals will therefore be able to invoke this article which gives them a wider scope of defense and places them on the same level as non-professionals and consumers who are protected against unfair terms according to the Article L212-1 of the French Consumer Code.

The DGCCRF (French Consumer Authority) has also looked at the case of Facebook. In a statement on February 9, 2016, the Authority declared having examined the Facebook terms of use and having found several clauses to be abusive: in particular, the clause authorising Facebook to remove, at its own discretion, content or information published on the network by a user and the clause in which Facebook reserves the right to unilaterally change the privacy policy without informing the user. The DGCCRF has publicly urged Facebook to remove these clauses which are considered unfair.

On January 26th, 2016, Facebook was served a formal notice by the CNIL (French Data Protection Authority) asking the company respect the Data Protection Act of January 6, 1978 in the area of collection and use of data. The social media network was accused of monitoring the navigation of users on other websites without their knowledge, even if such users are not in possession of a Facebook account. Since then, no information has been published neither by the CNIL nor by Facebook on the consequences of this notice. It is definitely a case to watch closely.

One can only congratulate French judges for having stood up to social media network providers and ensuring they respect the fundamental values of French law.

Dreyfus recently held a seminar on trademarks and domain names in Iran as international brands look toward  the country for opportunities. Nathalie Dreyfus reveals what was discussed, and how brands can benefit.

Click here to read the IPPro The Internet’s feature on the event.

For further information on the event or future events, please contact our team.

Nathalie Dreyfus, founder of Dreyfus, took part in the ERA Academy of Law conference on “The Protection of Geographical Indications”. During the conference, Ms. Dreyfus provided participants with an overview of the legal challenges present in the area of domain names and geographical indications.

To view an extract of the video presentation, please click here.

For further information or to contact Ms. Dreyfus, please click here. 

The hashtag, by its insertion before an expression or a word allowing contents to be classified by theme, has in a few years, become an essential tool for social networks, for private individuals as well as companies through their trademarks. The daily impact of this new communication tool in our connected society is undeniable. It is a direct channel of communication and offers a real proximity with the client.

It is interesting to observe that hashtags can be given the same definition as a trademark as per the Code of Intellectual Property as well as the European directive 2008/95/EC and must therefore be protected in the same way, provided however that registration is sought and that the established requirements are met. In France, Article L.711-1 of the Code of Intellectual Property states that: “The following may constitute [such] sign: a) All kinds of designations such as: words, word groupings, last names and geographical names, pen names, letters, numbers, abbreviations (…)”. A hashtag could therefore be protected under trademark law if it meets the same requirements applicable for trademarks, namely distinctiveness, availability and lawfulness.

Formal registration definitely allows a hashtag to be protected against any unlawful reproduction or imitation. However, it appears somewhat incongruous that the holder of a trademark on a hashtag prohibits its use by web users, as the hashtag’s relevance lies in its sharing and propagation. Only its use by a competitor in his business activities would be likely to be suppressed and deemed to be an infringement.

There are some companies, mostly in the United Sates, that have managed to register trademarks containing the famous symbol ‘#’. For example, the operator T-Mobile USA has filed the trademark ‘#7NIGHTSTAND CHALLENGE’ (n°4671787) with the USPTO, United States Patent and Trademark Office. In France, the trademark ‘#CLIENT ADDICT’ has for instance been filed by Futur Telecom under n°4096205 in classes 9, 35, 38 and 42.

However, recently the California Central District Court, in its decision in the case Eksuzian. v. Albanese, dated 7 August 2015¹ took the position that hashtags could not be registered as trademarks due to their descriptive nature: ‘« hashtags are merely descriptive devices, not trademarks (…)’. However, according to USPTO, commercial trademarks are words, names, or symbols used to distinguish one product from another. They must have a distinctive characteristic. There are generally 4 levels of specificities from “arbitrary and fanciful” to “generic”. For the more arbitrary and fanciful ones, the USPTO² allows the registration of a hashtag as trademark. On the other hand, generic trademarks do not benefit from this protection. The stand of the USPTO is more logical than that of the court: the purpose of trademark law is to protect and promote the distinctive characteristic, and to prevent other bodies from taking advantage of such distinctive characteristic. A hashtag potentially promotes the name, the reputation or even the product of companies.

As such, be in in France, at community or even international level, it would seem undeniable and logical that in the future and despite this decision of the California District Court, a distinctive hashtag would continue to be registered as trademark. It will be interesting to see how the situation pans out…

¹ California Central District Court, Eksuzian. v. Albanese, 7 August 2015.

² United States Patent and Trademark Office.

Setting out the evidence of an infringement on the Internet is not trivial, particularly regarding a lawsuit and despite the rule of evidence, a specific modus operandi established in that respect needs to be adhered to. As a matter of fact, in this respect, in 2010, a judgment of the Court of Appeal of Paris¹ (Cour d’Appel de Paris) points out that a mere screenshot by the plaintiff has no probative value and is not sufficient to prove the infringement.

Archive.org, a website administered by Internet Archive, a non-profit organisation, prides itself for having saved 450 billion of web pages with its wayback engine. Its system provides a snapshot of the content of a webpage with great reliability. Even though the contents of a URL address may have changed, the system of archive.org avoids this risk of modification over time and makes it possible to access a web page as it appeared in the past, up to several years before.

At national level, judges have for long been reluctant to recognise such evidence. France, United States, and also Germany have seen their respective courts refusing such means of evidence because of the absence of legal authority of the issuing body of the archives as well as the lack of reliability of the dates obtained. Contrarily, supranational legal bodies (the WIPO Arbitration Center, European Patent Office) have often been more flexible in this regard.

Firstly, the Court of Appeal of Paris (Cour d’Appel de Paris), on 2 July 2010, did not recognise any probative value to the internet finding of the case in question, effected by means of archive.org, on the basis that “the finding has been effected from an archive website exploited by a third party to the procedure, who is a private person without legal authority, which operating conditions are unknown”, before adding that “this search engine has not been created for legal use” and that “the absence of any interference on the way to giving access to the pages under investigation was therefore not guaranteed”. In truth, this decision is case specific since, in this case, the bailiff, here the third party, had wrongly identified the date on which the archiving had been carried out, and the parties then had to use the URL address of the website on which the said date appeared.

Thereafter, some judgments have wrongly considered this specific case as a rule, the case law then considering the findings effected through the “archive.org” website as being deprived of probative value.

However, the case law of the European Patent Office in this matter has undergone a recent change. On 21 May 2014, the EPO’s Boards of appeal (T 0286/10) gave a ruling² relating to taking into account the archives of the wayback engine in the case of an opposition to a patent. The Boards of appeal found no reason to consider the dates submitted by the Internet archives as being inaccurate, the burden of which lies on the defendant to prove “the new elements capable of discarding the suspicion and bringing contrary evidence destroying the presumption”. Furthermore, they specify that although the archives database is incomplete, it, with regards to its popularity and reputation, “demonstrates sufficient security to benefit from a presumption of a reliable and trustworthy source of information”, the burden of evidence to the contrary being on the adverse party.

This decision of the EPO therefore goes more in the upstream with regards to the acceptation of evidence submitted by a system of archives and in the legitimacy granted to the “archive.org” website. Similarly, the World Intellectual Property Office (WIPO) Arbitration and Mediation Center recognises the validity of evidence issued from the “archive.org” website.

However, the road towards the evolution of national considerations, and in particular French ones, seems long as long as the issuing body of screenshots is considered as illegitimate by the national judges.

Nevertheless, an evolution can be observed in French cases. Firstly, in a judgment of 19 March 2014, the Court of Appeal of Paris (Cour d’appel de Paris), based its decision on the comparison of websites provided by the “archive.org” website.

Furthermore, the Court of Appeal of Lyon (Cour d’appel de Lyon), on 28 May 2014, dated the beginning of the use of a domain name by taking into account screenshots from the “archive.org” website.

Finally, the TGI (Tribunal de Grande Instance) of Paris, admitted on 21 October 2015, the probative value of the “archive.org” website.

However, a bailiff’s findings seems necessary in order to point out useful pages. Indeed, case law considers that a mere screenshot is not enough as form of evidence in the absence of a bailiff’s findings. It will therefore be necessary to hire a bailiff with the relevant territorial jurisdiction and specialised in matters of “Internet findings”, in order to set out the findings in accordance with the Rule of Law. The probative value of the bailiff’s findings will depend on the compliance with a specific modus operandi, as well as the presence of specific technical statements, set out in case law and the Afnor NF Z67-147 norm, which, however, only amount to good practice guidelines³. It will concern, in particular, the description of the equipment used in order to reach the findings, the absence of proxy use and the deletion of cache memory. In the absence of such statements there will be a doubt as to the concordance between the page shown and the online one with regards to the findings. For them to be indisputable, the bailiff should also mention his IP address. It should also be noted that the evidence put forward with regards to the findings should have been obtained in good faith⁴.

These recent decisions therefore grant a certain probative value to the screenshots of the website “archive.org”. France therefore follows the decisions of the European and international bodies on this matter.

¹ CA of Paris 2-7-2010 RG n°2009/12757

² OEB, decision of the Technical Board of Appeal on 21 May 2014, Pointsec Mobile Technologies AB / Bouygues Telecom.

³ Court of Appeal of Paris, 27 February 2013

⁴ Court of Appeal of Paris, 7 October 2015: validity of screenshots if probative extrinsic elements supporting submitted elements, such as a bailiff’s findings, are provided. However, “the evidence put forward with regards to a bailiff’s findings should have been obtained in good faith”.